WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Papa John’s International, Inc. and Papa John’s (GB) Limited v. Irma Norberg
Case No. DEU2018-0013
1. The Parties
The Complainant is Papa John’s International, Inc. of Louisville, Kentucky, United States of America (“United States” or “US”) (the “First Complainant”) and Papa John’s (GB) Limited of Milton Keynes, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”) (the “Second Complainant”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Irma Norberg of Heidelberg, Germany.
2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name <papajohns.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is 1API GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2018. On April 26, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On May 2, 2018, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed two amended Complaints on May 4, 2018 and May 15, 2018, respectively.
The Center verified that the Complaint together with the amended Complaints satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 16, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was June 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2018.
The Center appointed Petra Pecar as the sole panelist in this matter on July 4, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the ADR Rules, Paragraph B(5).
4. Factual Background
The First Complainant is a company established in the United States, and it is the owner of a number of take-out and pizza delivery restaurants throughout the world. The First Complainant is the owner of trademark registrations across the world for the PAPA JOHN’S sign. In particular, the First Complainant is the owner of European Union Trademark (“EUTM”) No. 001126259 PIZZA PAPA JOHN’S, registered on March 26, 2001; EUTM No. 015670672 PAPA JOHN’S, registered on November 21, 2016; International Trademark Registration No. 1072439 PIZZA PAPA JOHN’S BETTER INGREDIENTS. BETTER PIZZA., designating the European Union (“EU”) and registered on March 21, 2011; UK Trademark No. UK00001556096 PAPA JOHN’S, registered on June 9, 1995; and UK Trademark No. UK00001556097 PAPA JOHN’S, registered on June 9, 1995.
The Second Complainant is a subsidiary of the First Complainant in the UK.
The Respondent is an individual based in Germany.
The disputed domain name was registered on September 2, 2016. It resolves to a website with various sponsored links, and it also contains a link to “www.sedo.com”, an online trading platform, where the disputed domain name is offered for sale.
On January 29, 2018, the First Complainant sent a formal cease and desist notice to the Respondent via email demanding from the Respondent the transfer of the disputed domain name to the First Complainant. The Respondent replied to this letter on January 29, 2018 indicating that the transfer could be arranged immediately for the amount of USD 8,000. On February 6, 2018, the First Complainant replied to the Respondent that it was willing to compensate her with USD 2,000 and that it would seek all available legal mechanisms in the event of a negative response. The Respondent replied on the same date that the transfer could be arranged for the discounted amount of USD 5,500. There is no evidence of any further communication between the Parties.
5. Parties’ Contentions
The Complainants (The First Complainant and the Second Complainant are collectively referred to below as “the Complainants” unless there is a reason to refer to them separately) contend that the disputed domain name is identical (or at least confusingly similar) to the Complainants’ PAPA JOHN’S trademarks because it incorporates the Complainants’ trademarks in their entirety. The fact that the disputed domain name also includes the country code Top-Level Domain (“ccTLD”) “.eu” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar.
The Complainants further argue that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants have not found that the Respondent has any registered trademarks corresponding to the disputed domain name nor are the Complainants aware that the Respondent has been using the name in any other way that would provide a legitimate interest in the disputed domain name. Consequently, the Respondent may not claim any rights established by common usage. Further, no license or authorization of any other kind has been given by the Complainants to the Respondent to use the trademark PAPA JOHN’S. WhoIs data identifies the Registrant as “Irma Norberg”, which does not resemble the disputed domain name in any manner. Thus, where no evidence suggests that the Respondent is commonly known by the disputed domain name, then the Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name.
The Complainants contend that the Respondent presumably monetizes the disputed domain name as the same resolves to a website that contains links to third-party websites (pay-per-click). Such use of the disputed domain name cannot be observed as a bona fide offering of goods or services that would give rise to rights or legitimate interests in the disputed domain name. The disputed domain name is being offered for sale in an amount that by far exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain name, which serves as further evidence of the Respondent’s lack of rights and legitimate interests. Additionally, the Complainants have added that the Respondent has registered the disputed domain name on September 2, 2016, which is significantly after the First Complainant filed for registration of its PAPA JOHN’S trademark and also significantly after the First Complainant’s first use in commerce of its trademark (September 1, 1981). The Respondent’s registration of the disputed domain name also occurred significantly after the First Complainant’s registration of its <papajohns.com> domain name (July 29, 1995).
The Complainants also argue that the disputed domain name has been registered and used in bad faith. Namely, the Complainants and their PAPA JOHN’S trademarks are known internationally, with trademark registrations across numerous countries. The Complainants have marketed and sold their goods and services using this trademark since 1981, well before the Respondent’s registration of the disputed domain name. Therefore, at the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainants’ trademarks and that registration of domain names containing such trademarks constitutes bad faith per se. Further, searching for the term “Papa John’s” across a number of Internet search engines returns multiple results referencing the Complainants and their businesses.
The Complainants further contend that the Respondent creates a likelihood of confusion with the Complainants and their trademarks by registering a domain name that is identical to the Complainants’ PAPA JOHN’S trademarks, which demonstrates that the Respondent is using the disputed domain name to confuse Internet users looking for the Complainants’ services, and to mislead them about the source of the disputed domain name and website. By creating such likelihood of confusion between the Complainants’ trademarks and the disputed domain name, the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainants’ trademarks in order to increase traffic to the disputed domain name’s website for the Respondent’s own pecuniary gain.
Additionally, the Respondent is currently offering to sell the disputed domain name for valuable consideration in excess of her out-of-pocket expenses. It is well established that seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trademark demonstrates bad faith. The Complainants have contacted the Respondent through a cease and desist letter advising that the unauthorized use of the PAPA JOHN’S trademark within the disputed domain name violates the Complainants’ trademark rights and have requested voluntary transfer of the same. The Respondent replied offering the disputed domain name for a price of USD 8,000 and then eventually for USD 5,500. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainants have chosen to file a complaint in accordance with the Regulation and the ADR Rules.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
According to Article 21(1) of Regulation (EC) No. 874/2004 (“the Regulation”) and in connection with Paragraph B(11)(d)(1) of the ADR Rules, the Panel shall issue a decision granting the remedy requested by the Complainant if the latter proves in the ADR proceeding that:
(i) the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) the domain name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) the domain name has been registered or is being used in bad faith.
In the present ADR proceeding, the Complainants have pleaded the cumulative existence of the circumstances provided by the Regulation and ADR Rules (points (i), (ii) and (iii) above). The Panel notes that the Regulation and ADR Rules list the issues under points (ii) and (iii) in the alternative, but nevertheless the Panel will examine both of these issues in order to reach its decision in the present ADR proceeding.
A. Identical or Confusingly Similar to a Name in Respect of Which a Right or Rights Are Recognized or Established by National Law of a Member State and/or Community Law
Article 21(1) of the Regulation states that “[a] registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that [domain] name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or Community law, such as the rights mentioned in Article 10(1).”
Article 10(1) of the Regulation refers to, inter alia, registered national trademarks and EUTMs.
Paragraph B(11)(d)(1)(i) of the ADR Rules requires that the disputed domain name be “identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a member State and/or Community law.”
The Panel notes that the First Complainant is the owner of several trademark registrations for the sign PAPA JOHN’S, including EUTMs, International Registrations designating the EU and US national trademarks. Trademarks that are registered in the US are outside of the territorial scope of the Regulation, and the same are not taken into account in the assessment of this matter. The disputed domain name <papajohns.eu> is identical to the Complainants’ trademarks, with the predominant verbal element of the Complainants’ PAPA JOHN’S trademarks. The lack of the apostrophe in the disputed domain name does not affect such identity, as the apostrophe character is not supported for “.eu” domain names (as determined in Section 2(2)(ii) of Domain Name Registration Terms and Conditions). Furthermore, the additional ccTLD “.eu” should be disregarded for the purpose of the comparison in accordance with well-established practice. The same has also been determined by former ADR panels (for instance, see Tenaris Connections BV v. Cristian Liviu Panea, BisonMedia, WIPO Case No. DEU2017-0007).
Therefore, the Panel finds that the disputed domain name is identical to the trademark PAPA JOHN’S, in respect of which a right of the Complainants is established under UK and Community law. The condition set forth in Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules is therefore fulfilled.
B. Rights or Legitimate Interests
Article 21(2) of the Regulation and Paragraph B(11)(e) of the ADR Rules provide a non-exhaustive list of circumstances which, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name for the purposes of Paragraph B(11)(d)(1)(ii) of the ADR Rules. These circumstances include, inter alia, that prior to any notice of the dispute, the Respondent has used the disputed domain name or a name corresponding to the disputed domain name in connection with the offering of goods or services or has made demonstrable preparations to do so, that the Respondent has been commonly known by the disputed domain name and that the Respondent is making a legitimate and noncommercial or fair use of the disputed domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.
Based on the arguments provided by the Complainants and the lack of any evidence to the contrary, the Respondent does not appear to be connected or associated with the Complainants in any way. The Complainants have not granted any license or permission for the Respondent to use their trademark or to apply for or use any domain name incorporating such trademark.
Also, the Respondent does not appear to be commonly known by the disputed domain name. The Respondent’s name is Irma Norberg, and she is based in Germany with no clear connection with the name “Papa John’s”. Given the fact that the Respondent is female, it is even more unlikely that she would be known by the male nickname “Papa” and male name “John”.
As demonstrated by the Complainants and as determined by the Panel in accordance with Paragraph B(7)(a), the disputed domain name resolves to a website with pay-per-click links mostly related to the Complainants or to pizza restaurants and food delivery in general. The use of the disputed domain name incorporating a third-party trademark for placing a website with links that are generating revenue is commonly associated with lack of legitimate interest for using such domain name, and it also cannot be observed as a noncommercial or fair use of the disputed domain name.
The disputed domain name is also offered for sale for an amount that exceeds the out-of-pocket costs associated with registration and maintenance of a domain name. It is offered for sale via the SEDO trading platform for USD 8,500 (formerly for USD 9,000), and it was offered by the Respondent to the Complainants for USD 8,000 (subsequently discounted to USD 5,500). This in aggregation with other evidence indicates the Respondent’s lack of legitimate interest in the disputed domain name, as it appears that the same was registered with the sole purpose to be sold either to the Complainants or another interested party. Offering of domain names for sale should not be observed as problematic per se, but along with other circumstances (such as the identity of the domain name with a trademark owned by a third party), it can demonstrate a strong indication of lack of legitimate interest of the Respondent.
As the Respondent has failed to submit any response to the Complaint and bearing in mind the evidence presented by the Complainants, the Panel concludes that sufficient evidence is presented in respect of the Respondent’s lack of any rights or legitimate interest related to the disputed domain name. The Respondent had an opportunity to challenge the allegations from the Complaint and to present evidence of its rights and/or legitimate interest in the disputed domain name, but has decided not to do so, which might be observed as an additional indicator that the Respondent lacks any rights or legitimate interest in respect of the disputed domain name.
Given all the circumstances determined above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the condition under Article 21(1)(a) of the Regulation and Paragraph B(11)(d)(1)(ii) of the ADR Rules is satisfied.
C. Registered or Used in Bad Faith
Although the Panel has determined that the Complainants have sufficiently met the criteria for the second condition under Article 21(1)(a) of the Regulation, and it is therefore unnecessary for the Complainants to also satisfy the third condition, the Panel will nevertheless render findings on the arguments and evidence presented. Further, the third ADR condition is posed alternatively, meaning that it is sufficient for the Complainants to prove that the disputed domain name is either registered or used in bad faith. As the Complainants have provided arguments in support of both registration and use in bad faith, the Panel will examine both grounds for the sake of completeness.
The First Complainant registered its PAPA JOHN’S trademarks long before the disputed domain name was registered by the Respondent (with the exception of EUTM No. 015670672 which was registered subsequently), and the Complainants have operated their businesses under that trademark for decades before the registration of the disputed domain name. Consequently, it is unlikely that the Respondent was unaware of the Complainants and their businesses at the time of the registration. On the contrary, when all other circumstances are taken into account, it is plausible that the Respondent was targeting the Complainants with this particular registration of the disputed domain name.
In the case at hand, the results of even a brief Internet search would indicate that all first-page results are related to the Complainants, making it unlikely that the Respondent did not have the Complainants in mind while registering the disputed domain name.
The disputed domain name has been used for commercial purposes in order to attract visitors to a website associated with it, which contains sponsored (pay-per-click) links that create potential revenue for the Respondent. Such use of a domain name is commonly associated with bad faith.
The Respondent’s intent to sell the disputed domain name via the SEDO trading platform for an amount that is in excess of her out-of-pocket expenses is also a strong indicator of her bad faith use. Additionally, the Respondent’s response to the Complainants’ cease and desist letter with an offer to transfer the disputed domain name for the amount of USD 8,000 (and eventually for the discounted amount of USD 5,500) in the light of all other evidence, represents another indicator of bad faith use of the disputed domain name.
In the light of all facts presented by the Complainants and also in the light of the Respondent’s failure to answer to these facts, it should be deemed that the disputed domain name has been registered and is being used in bad faith, and therefore, the third condition of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(iii) of the ADR Rules is fulfilled as well.
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <papajohns.eu> be transferred to the Second Complainant, Papa John’s (GB) Limited.1
Date: July 27, 2018
1 The second amended Complaint requests the transfer of the disputed domain name to be made to the EU-based entity, Papa John's (GB) Limited, located in the UK.
Article 4(2)(b) of Regulation (EC) No 733/2002 provides that “the Registry shall register domain names in the .eu TLD through any accredited .eu Registrar requested by any: (i) undertaking having its registered office, central administration or principal place of business within the Community, or (ii) organisation established within the Community without prejudice to the application of national law, or (iii) natural person resident within the Community”. Additionally, Article 2(6) of Regulation (EC) No 874/2004 stipulates that “Domain names registered under the “.eu” TLD shall only be transferable to parties that are eligible for registration of “.eu” domain names.”
Therefore, the Second Complainant satisfies the eligibility criteria as it is an organization established in the UK.